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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Chemise Lacoste v. M. Lee Ji Hong
Case No. D2001-0956
1. The Parties
Complainant is La Chemise Lacoste, S.A. a corporation organized under the laws of France, having a principal place of business at 8, rue de Castiglione, 75001 Paris, France.
Respondent is M. LEE Ji Hong, with a listed mailing address of 402 Anguk B/D 4F. 595-1 Sinsa-Dong, Kangnam Ku, Seoul 135-120, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name at issue [hereinafter the Domain Name] is:
The Registrar of the Domain Name is Tucows, Inc., with an address at 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada.
3. Procedural History
On July 25, 2001, Complainant submitted, via e-mail, a Complaint [hereinafter the Complaint], drafted in French, with the WIPO Arbitration and Mediation Center [hereinafter the Center]. The Center received the hardcopy of the Complaint on July 27, 2001. On July 26, 2001, the Center confirmed receipt of the Complaint to the Complainant, via e-mail. On July 27, 2001, the Center informed the Registrar, Tucows, Inc., that the Complaint had been submitted to the Center regarding the Domain Name, and asked for a verification of the registrant information. The said verification results from the Registrar were received on July 31, 2001.
On August 1, 2001, the Center, via email, contacted the Registrar and asked it to specify the language of the Registration Agreement. Said verification results from the Registrar were received on August 2, 2001.
On August 3, 2001, the Center, via email, informed the Complainant of the fact that there was a deficiency in the Complaint; the deficiency was the fact that the Complaint was drafted in the French language instead of the appropriate language dictated by the ICANN Rules, which in this particular case was to be English.
On August 6, 2001, Complainant submitted, via e-mail, an English version of the Complaint with the Center. The Center received the hardcopy of the translated Complaint on August 8, 2001.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 9, 2001.
In a letter dated August 9, 2001, the Center informed the Respondent of the commencement of the proceeding as of August 9, 2001, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceeding.
On August 1, 13, 24 and 28, 2001, the Center received various emails from the Respondent requesting explanations and directions as to what he should do at this point in the procedure. The Center responded to these emails on each occasion.
On August 30, 2001 (9:27 A.M), the Center received a response (hereinafter the Response) from the Respondent, in its electronic form. In an email dated August 30, 2001 (9:30 A.M.), the Center informed the Respondent that it was in default to provide a Response within the allotted time period and that pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of Panelists designated by the Complainant. Nevertheless, the Center informed the Respondent that the Late-Filed Response would be forwarded to the Panelist, who would have the sole discretion whether to consider the material submitted.
The Panel has reviewed the documentary evidence provided by both parties and the Panel agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On September 12, 2001, the Center informed both parties, by e-mail, that an Administrative Panel had been appointed.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to September 26, 2001, in the English language and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant in this Administrative Proceeding, La Chemise Lacoste S.A., is a recognized industry-leading designer, manufacturer and marketer of clothing garments and various fashion accessories such as perfumes, shoes, etc.
Founded in 1933, pursuant to the historical commentary found on its website at <www.lacoste.fr>, the Complainant’s and its association with the LACOSTE trademark has been made to be known to the public, quite well, on an international level.
Although the Complainant has probably used trademark LACOSTE as early as its inception, the evidence shows that, the Complainant or its predecessors have registered and/or utilized trade names and trademarks consisting of the term LACOSTE in various forms and combinations in the People's Republic of China and in Korea, since at least 1980. In fact the complaint is based upon the following trademark registrations (copies of which are enclosed as Annexes C and D of the Complaint):
Trademark registrations LACOSTE (word) in Korea (Annex C):
N° 114.103 in international classes 18, 24, 25, 26
N° 70009 in international class 18
N° 70101 in international class 3
N° 70103 in international class 9
N° 215.521 in international class 3
N° 69130 in international classes 25, 28
N° 70077 in international class 25
N° 338.052 in international class 24
N° 140.147 in international class 14
N° 411.684 in international classes 24, 26
Trademark registrations LACOSTE (word) in P.R.C (Annex D):
N° 114.112 in international class 3
N° 274.889 in international class 14
N° 213.409 in international classes 24, 25
N° 141.102 in international class 25
N° 213.408 in international class 25
N° 213.410 in international class 26
N° 141.110 in international class 28
N° 606.313 in international classes 35, 41, 42
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent is a person who resides in the Republic of Korea.
As shown by the evidence consisting of a Whois printout registration, the Respondent registered the Domain Name, which consisted of <lacostechina.com> on May 18, 2000.
The evidence also reveals that after registering the Domain Name and having held it for over a year, Respondent offered it up for sale to the Complainant, for the amount $5000 USD.
There is no relationship between the Respondent and the Complainant. The Respondent is not a Licensee of the Complainant nor has he otherwise obtained any authorization to use the Complainant’s marks or applied for any Domain Name incorporating any of these marks.
5. Parties’ Contentions
The Complainant alleges that the trademark LACOSTE is a notorious trademark and has been registered in the P.R.C., Korea as well as throughout the world. The registration of the Domain Name <lacostechina.com>, which includes the term "lacoste" is therefore confusingly similar to the LACOSTE trademark.
The Complainant alleges that it is actively handling numerous national websites, namely in the P.R.C., in Korea and in the United States of America and is the owner of numerous Domain Name registrations throughout the world. Moreover, the Complainant alleges that the Respondent is obviously aware of the Complainant’s activities on the web and the filing of the Domain Name <lacostechina.com> strengthens the notion of the Respondent’s bad faith.
The Complainant alleges that the Domain Name <lacostechina.com> should be considered to be registered and used in bad faith taking into account that, following the Complainant’s warning letter (at Annex G) to the Respondent, the Respondent claimed that he never heard of LACOSTE before, despite the 80 points of sale in Korea.
The Complainant alleges the illegitimate use of the Domain Name when it states that the Respondent claimed that he filed the Domain Name <lacostechina.com> in the scope of doing business between the P.R.C. and the United States of America, business activity that he started seven years ago. Up to this date, the Domain Name is still inactive although registered for more than one year (at Annex H).
Furthermore, the Complainant alleges illegitimate use of the Domain Name because of the reason that despite the fact the Respondent pretends to be doing business between the P.R.C. and the United States of America, the Respondent informs the Complainant that he is negotiating the selling of the Domain Name to a Chinese company.
Although, technically, the Respondent has failed to file a timely Response with the Center, it is within the Panel's competence to nevertheless take the Respondent's allegations or justifications into account. In the present case, the Respondent filed his Response one-day past the due date. In the interest of equity, the right to be heard, and to paraphrase Justice Pigeon of the Supreme Court of Canada "procedure is the servant of justice and not its master", the Panel will consider the Respondent’s contentions.
The Respondent made the following allegations in his Response:
Respondent does not challenge the trade or service mark rights asserted by the Complainant.
Respondent alleges that he "never have any goods or service in which could be treated as similar one as complainant insisted".
Respondent alleges that "They [Complainant] cannot insist to use "lacostechina" name only by themselves, it could be understood not for the "lacoste" only it could be explained as "LA coste" this must be different each other".
Respondent alleges that as far as registration and use in bad faith is concerned, he has not done any commercial action or production under that domain name» and has «not any concern with complainant’s commercial business fields".
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred to this end, it is incumbent upon the Complainant to cumulatively show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
(i) Identical or Confusingly Similar to Trademark
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark LACOSTE and finds that the Complainant has satisfactorily shown that it owns such rights. Furthermore, the Respondent, in his Response, does not challenge the trade or service mark rights asserted by the Complainant.
With respect to the confusing similarity between Complainant's trademark and Respondent’s Domain Name; In the decision, The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, the Panel held: "In determining whether a Domain Name is confusingly similar to a trademark, the intention of the Domain Name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed."
In this case, the second-level part of the Domain Name is phonetically and visually similar to the Complainant’s trademark LACOSTE. Thus an average Internet user who has knowledge or recollection of the name, LACOSTE, might easily mistake the Domain Name, as being somehow affiliated to or owned by the Complainant. The fact that the Domain Name includes the term "china" does not, in any way distinguish it from the Complainant’s trademark. This term simply refers to a geographical location and does not add any distinctiveness to the Domain Name. In fact, the Panel conducted its own proprio motu internet search and found various websites associated to the Complainant and its trademark, LACOSTE. Moreover, there seemed to exist websites for Japan, Korea, and China, which could be confused to be associated with the Domain Name. The Panel is of the opinion that Respondent’s argument that the Domain Name, "could be understood not for the "lacoste" only it could be explained as "LA coste" this must be different each other", is incomprehensible and consequently does not impact the Panel's view on this point.
The Panel is therefore of the opinion that the Complainant has met its burden of proof as established by paragraph 4(a)(i) of the ICANN Policy and concludes that the Domain Name is confusingly similar to Complainant’s LACOSTE trademark.
(ii) No Rights or Legitimate Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that there is no evidence to support any finding of a right or legitimate interest in the Domain Name on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has he attempted to show that he has commonly been known by the Domain Name, nor has he attempted to show a legitimate non-commercial or fair use of the Domain Name.
Furthermore, the Panel is also of the opinion that the Respondent, in all intents and purposes, admitted to not using the Domain Name in a legitimate manner when he stated in his Response that "I have not done any commercial action or production under that domain name". Also, in a translated letter to the Complainant (attached as Annex G of the Complaint), the Respondent stated, "we have never done any business activities using the questioned Domain Name". Furthermore, the Panel, while conducting its proprio motu search on the Internet, attempted to visualise the cyberspace destination associated to the Domain Name; as of the date this decision is rendered there is no such site.
For these reasons, the Panel concludes that, on the balance of probabilities, the Complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Name.
(iii) Bad Faith
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove, on the balance of probabilities, that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances tend to indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, then this might be evidence of bad faith registration and use on behalf of the Respondent.
The Panel has taken note of uncontested evidence, which indicates that after registering the Domain, the Respondent offered it up for sale to the Complainant with the asking price of $5000 USD. The Panel is of the opinion that the Complainant has satisfied its burden to establish, on this ground alone, that the Respondent was intending to demand more than his out-of-pocket costs directly related to the registration of the Domain Name, a necessary component of a finding of bad faith when offering a Domain Name for sale pursuant to paragraph 4(b)(i) of the ICANN Policy.
Furthermore, the Panel is also of the opinion that the passive holding of the Domain Name since its registration in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, all infer bad faith, pursuant to the 4(a)(iii) of the ICANN Policy on the part of the Respondent. (See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Finally, the Panel is also of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163), followed by this Panel in LLS International v. Mark Freeman, WIPO Case No. D2000-1080, and Altavista Company v. Grandtotal Finances Ltd., WIPO Case No. D2000-0848.
For the foregoing reasons, the Panel concludes that the Complainant has met its burden of proof and has proven that the Respondent’s actions have been in bad faith, pursuant to paragraphs 4(b)(i) and (iv) of the ICANN Policy.
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademarks in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the Domain Name <lacostechina.com> be transferred to the Complainant by the Registrar.
Jacques A. Léger, Q.C.
Dated: September 26, 2001